The Boeing Company (“Boeing”) filed a motion to stay pending inter partes review” (“IPR”) after Boeing had requested that the United States Patent and Trademark Office (“PTO”) conduct an inter partes review of U.S. Patent No. RE39,618 (“the ‘618 patent”). Boeing argued that the asserted claims of the ‘618 patent were unpatentable and sought a stay of the case until the PTO decided whether to accept review and determines the patentability of the challenged claims.

The district court noted that it has broad discretion to manage its docket, including the inherent power to grant a stay pending agency review. Procter & Gamble Co. v. Kraft Foods Global, Inc., 549 F.3d 842, 849 (Fed. Cir. 2008). When determining whether to grant a stay, courts generally consider three factors: 1) whether a stay will simplify the issues in question; 2) the stage of litigation, i.e., whether discovery is complete and whether a trial date has been set; and 3) whether a stay would unduly prejudice the non-moving party. Zillow, Inc. v. Trulia, Inc., C12-1549JLR, 2013 WL 5530573, at *3 (W.D. Wash. Oct. 7, 2013); Nat’l Prods., Inc. v. Gamber-Johnson LLC, C12-840RSL, 2012 WL 3527938, at *1 (W.D. Wash. Aug. 14, 2012).
In terms of the first prong, simplification of the issues, the district court found that “[b]ecause the PTO has not yet determined whether to conduct an inter partes review of the ‘618 patent, there is a significant chance that a review will never occur. A stay at this point, then, may have no salutary effects and would simply delay the litigation. The percentages offered by defendant do not better its argument. A 67% chance that review will be granted combined with a 79% chance that the review will be favorable to defendant is not much better than a toss-up. At this stage, the Court cannot find that a stay is likely to result in a simplification of the issues.”

The district court then found that the stage of the litigation weighed in favor of a stay. “Despite the passage of ten months since the case was originally filed in the Northern District of Illinois, it is still in the early stages of litigation. This factor weighs heavily in favor of granting a stay to conserve resources and to avoid the risk of wasted effort and/or inconsistent determinations. Avocent Redmond Corp. v. Rose Elecs., Inc., C06-1711MJP, 2008 WL 3875869, at * (W.D. Wash. Aug. 18, 2008). However, because the PTO has not yet agreed to review the claims of the ‘618 patent, there is no pending proceedings that may be duplicative or would render this litigation unnecessary. Consequently, this factor weighs less heavily in favor of defendant than it otherwise would.”

Turning to the prejudice prong, the plaintiff argued that he would be prejudiced by a stay because, at his advanced age, any delay in the resolution of the case would be problematic. The district rejected this reasoning but once again focused on the stage of proceedings at the PTO. “But the validity of the ‘618 patent is at issue and will have to be resolved in one forum or another. Plaintiff does not explain why deferring to the PTO’s expertise for resolution of these matters would cause prejudice when litigating the same issues in two different proceedings would not. Again, however, the PTO has not yet agreed to determine validity, making it hard to justify any delay that might be caused by a stay. The fact that the litigants do not compete in the same market also reduces the likelihood of prejudice: any alleged infringement would not result in a loss in market share or an erosion of goodwill and can be remedied through a damage award.”

Stan Gibson, an experienced technology and IP trial lawyer, represents inventors, manufacturers, owners and others in litigation centering on complicated technology. Stan's practice is national in scope and he represents both plaintiffs and defendants and has litigated dozens of cases on behalf of his clients, taking many of them to trial. Although most cases settle, Stan's ability to take cases to trial enhances their value and drives favorable verdicts and settlements. Contact him at 310.201.3548 or SGibson@jmbm.com.

Greg Cordrey, an experienced patent litigator and former flight test engineer, represents a wide range of industries including medical device, computer, e-commerce, semiconductor, automotive, aircraft, and consumer products. He has litigated patent cases nationwide and has practiced before the Federal Circuit and the U.S. Patent and Trademark office as a registered patent attorney with experience in concurrent litigation and patent reexamination proceedings. Greg is recognized as one of the "Best Lawyers in America" in IP Law, as well as a "Super Lawyer" and "Rising Star." Contact him at 949.623.7236 or GCordrey@jmbm.com.

Rod Berman is recognized by the Daily Journal as one of the top 30 intellectual property attorneys in the State of California, and by the Los Angeles Business Journal as one of the top 100 attorneys in Los Angeles. Rod's practice focuses on patent, trademark, copyright, unfair competition and internet responsibilities and includes counseling, litigation, opinions, licensing and prosecution. In addition to being a registered patent attorney, Rod is a court-recognized expert in patent and trademark law, and has successfully argued before the Federal Circuit. Contact Rod at 310.201.3517 or RBerman@jmbm.com.

Andrew Shadoff, is a litigation associate who has assisted in prosecuting and defending patent infringement lawsuits involving mechanical devices. He has drafted successful summary judgment motions and pretrial motions in limine, and has assisted with trial and witness preparation. Contact him at 310.712.6856 or AShadoff@jmbm.com.

Joe Mellema's practice focuses on litigation in federal and state courts, including the protection and enforcement of intellectual property rights, and business and commercial disputes. He has handled patent, trademark, copyright, trade secret, unfair business practices, antitrust, and business and commercial lawsuits in all phases of litigation and arbitration. In addition to a law degree, he has dual degrees in electrical engineering and physical sciences, and was formerly a systems engineer at Raytheon Company. Contact him at 949.623.7232 or at JMellema@jmbm.com.

Rachel Capoccia

Rachel Capoccia focuses on technology-based litigation and counseling, with an emphasis on patent litigation, copyright litigation and other technology-related matters. Her legal experience is complemented by 10 years working at IBM as a software engineer before law school, during which she led a team of engineers who developed computer graphics software and computer aided design systems. She represents clients in all phases of patent infringement matters involving diverse areas of technology. Contact Rachel at 310.201.3521 or RCapoccia@jmbm.com.

Jessica Newman is a litigation associate, and a member of JMBM's Patent Litigation Group. She is involved in all aspects of litigation and has assisted in representing clients in a variety of industries with regards to patent infringement and copyright infringement issues. Contact her at 310.785.5372 or JNewman@jmbm.com.